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JSC Baltikums Bankas Grupa and Insurance JSC Baltikums v. Masayoshi Hotta [2005] GENDND 1812 (5 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

JSC Baltikums Bankas Grupa and Insurance JSC Baltikums v. Masayoshi Hotta

Case No. D2005-0735

1. The Parties

The Complainants are JSC Baltikums Bankas Grupa (Complainant no.1) and Insurance JSC Baltikums (Complainant no. 2), Riga, Latvia; represented by Nina Dolgicer, Latvia.

The Respondent is Masayoshi Hotta, Tokyo, Japan, represented by himself.

2. The Domain Names and Registrars

The disputed domain names <baltikums.biz>, <baltikums.net>, <baltikums.org>, <baltikums.tv> are registered with OnlineNic, Inc. d/b/a China-Channel.com and Global Media Online Inc. dba Discount-Domain.com & Onamae.com..

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2005. On July 12, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com and to Global Media Online Inc. dba Discount-Domain.com & Onamae.com, requests for registrar verification in connection with the domain names at issue. On July 13 and 19, 2005 respectively, OnlineNic, Inc. d/b/a China-Channel.com and Global Media Online Inc. dba Discount-Domain.com & Onamae.com, transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on July 21 and 27, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2005. The Response was filed with the Center August 19, 2005.

The Center appointed Peter G. Nitter, Knud Wallberg and Masato Dogauchi as panelists in this matter on September 21, 2005. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Respondent is a Japanese natural and has responded in Japanese. Only one of the panelists is familiar with the Japanese language. Since Respondent has shown that he also understands English, two members of the Panel have decided, after examining the Response through an informal office translation done by the third panelist, that English should be the language of the decision and of these proceedings.

4. Factual Background

Complainant No. 1 is the owner of the Latvian word mark Baltikums registered on October 20, 2002, under registration No. M50161 (LV).

Further Complainant No. 1 is the owner of the international registration Baltikums, IR No. 795784 registered on November 19, 2002, based on its Latvian registration.

Complainant No. 1 is also the owner of a Latvian combined trademark Baltikums, registration No. M50264 (LV) registered on November 20, 2002.

Complainant No. 2 is the owner of the word mark Baltikums registered on September 20, 1998 under registration No. M42176 (LV).

The Complainants belong to the same group, and the word Baltikums has been continuously used as a trademark and a key component of corporate names in connection with the group’s business since the foundation of JSC “Baltikums Bankas Grupa” in 1994.

The Complainants operate in the fields of insurance, financial transactions and monetary and real estate affairs and provide their services also via the Internet. The trademark Baltikums is well known in Latvia and in some neighbouring countries.

Respondent is a Japanese natural offering, among others, financial, consulting and advisory services on the Internet.

Respondent registered the Domain Names in the period February 28 - March 9, 2002.

5. Parties’ Contentions

A. Complainant

The Complainants claim to have trademark rights in the word mark Baltikums.

The Domain Names are confusingly similar to the Complainants’ trademark. The different gTLDs are irrelevant to the finding of confusing similarity.

The Complainants have not authorized the use of the Domain Names by Respondent. Neither have the Domain Names been used by Respondent prior to notice of infringement in connection with a bona fide offering of services.

Respondent had full knowledge of Complainants’ trademarks when registering the Domain Names. Further Respondent’s conduct proves that he is well aware of the commercial value of the Complainants’ names and trademarks. By using the Domain Names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with the Complainants’ trademarks.

B. Respondent

Respondent claims to have been the previous head of the Tokyo office of the Complainants, and that he has rendered - and still renders - services in connection with the issuance and redemption of Latvian governmental bonds. Further he claims to have registered the trademark Baltikums in Japan with the consent of the Complainants.

All these claims are contested by the Complainants.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainants have proved to hold rights in the trademark Baltikums. The mark is registered in several countries around the world including in the country of residence of the Respondent, Japan.

The Domain Names only differ from the trademarks in that they have been added various different gTLDs. According to consistent UDRP practice this difference is irrelevant, and the Panel concludes that the Domain Names are confusingly similar to the trademarks of the Complainants.

B. Rights or Legitimate Interests

The Complainants have not authorized Respondent to register or use the trademark Baltikums as a domain name.

Respondent claims that he has been the head of the Tokyo office of the Complainants and that he has rendered services in connection with the issuance and redemption of Latvian governmental bonds. This is contested by the Complainants, and in view of the Panel, Respondent’s claims do not seem properly substantiated. However, even if the decision were to be based on the facts asserted by the Respondent, these facts would not in themselves justify that Respondent has a right or legitimate interest in the Domain Names.

Respondent has also claimed that he has registered the trademark Baltikums in Japan with the consent of the Complainants. The Panel cannot see that Respondent has proved such a consent. Respondent alleges he holds registrations of the mark Baltikums in Japan. To the extent that these are valid, this has not been verified, the Panel notes that applications for these registrations were submitted after the registration of the contested Domain Names and that they concern goods and services that differ from the financial services offered by Complainants, and from those services that have been offered under the contested Domain Names.

For these reasons, the Panel concludes that the Respondent has not presented the Panel with circumstances that demonstrate rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

The trademark Baltikums is a coined word that has been created by the Complainants as a derivative from the word “Baltic” adding the Latin ending “um” and applying certain word-building rules of the Latvian language. Therefore the word writing has such peculiarities as letter “k” instead of letter “c” and “s”-ending which in the Latvian indicates the masculine gender. By such word-building the Complainants have achieved that the word indicates both the geographical sphere or region of their business and the Complainants’ origin.

These peculiarities are repeated in the contested Domain Names as well as in other of Respondent’s domain names that are not included in this proceeding.

By the end of 2001, Complainants appeared in several announcements in the global mass media.

Based on the case file, it appears that the Respondent had prior knowledge of the Complainants when the Respondent registered the Domain Names in February/March 2002. Shortly thereafter, the Respondent filed various applications for registration of the trademark Baltikums in Japan albeit for other goods and services than financial services.

The above facts all indicate that the registration took place in bad faith.

Respondent runs a competing business on his websites, and the websites resemble the websites of the Complainants in various respects. This fact does not only indicate prior knowledge of the Complainants’ trademark, but a likelihood that visitors to Respondent’s website are misled to believe that they have arrived at the websites of the Complainants. Accordingly, the Panel concludes that the Domain Names are used in order to attract business to Respondent’s website by confusing Internet users. Hence the Domain Names are also used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <baltikums.biz>, <baltikums.net>, <baltikums.org> and <baltikums.tv>, be transferred to the Complainants.

Peter G. Nitter Presiding Panelist
Knud Wallberg Panelist	Masato Dogauchi Panelist

Dated: October 5, 2005